USPTO Patents Application 09870801

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V

FILED

ORIGINAL

O

WILLIAM L. ANTHONY (State Bar No. 106908))
ERIC L. WESENBERG (State Bar No. 1 39696)

MARK R. WEINSTEIN (State Bar No. 193043) > 2801 AUG 29 PH 3'- 59
ORRICK, HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road cPes " u tr'I^ court

Menlo Park, CA 94025 HORihEhi; ki^ric i of California

Telephone: (650)614-7400
Facsimile: (650)614-7401

JAMES E. GERINGER (admitted Pro Hac Vice)
JOHN D. VANDENBERG (admitted Pro Hac Vice)
KLARQU1ST SPARKMAN, LLP
One World Trade Center, Suite 1 600
121 S.W. Salmon Street
Portland, OR 97204
Telephone: (503)226-7391
Facsimile: (503) 228-9446

Attorneys for Defendant
MICROSOFT CORPORATION

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

INTERTRUST TECHNOLOGIES
CORPORATION, a Delaware corporation,

Plaintiff,

v.

MICROSOFT CORPORATION, a
Washington Corporation,

Defendant.

CASE NO: C 01-1640 SBA

MICROSOFT CORPORATION'S
ANSWER TO THE SECOND
AMENDED COMPLAINT

Defendant Microsoft Corporation ("Microsoft") answers the Second Amended
Complaint of InterTrust Technologies Corporation ("InterTrust") as follows:

1 . Microsoft admits that the Second Amended Complaint purports to state a
cause of action under the patent laws of the United States, 35 United States Code, §§ 271 and
281 . Microsoft denies that it has infringed or now infringes the patents asserted against Microsoft
in the Second Amended Complaint. Microsoft denies any and all remaining allegations of
paragraph 1 of the Second Amended Complaint.

DOCSSVl:158433.1

Microsoft's Corporation's Answer to Second
Amended Complaint, Case No. C 01-1640 SBA

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2. Microsoft admits that the Second Amended Complaint purports to state a
cause of action over which this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and
1338(a).

3. Microsoft admits, for purposes of this action only, that venue is proper in
this judicial district. Microsoft denies any and all remaining allegations of paragraph 3 of the
Second Amended Complaint.

4. Upon information and belief, Microsoft admits the allegations of paragraph

4 of the Second Amended Complaint.

5. Microsoft admits the allegations of paragraph 5 of the Second Amended

Complaint.

6. Microsoft admits, for purposes of this action only, that it transacts business
in this judicial district. Microsoft denies any and all remaining allegations of paragraph 6 of the
Second Amended Complaint.

7. Microsoft admits that on its face the title page of U.S. Patent No. 6,1 85,683
Bl ("the '683 Patent") states that it was issued February 6, 2001, is entitled "Trusted and secure
techniques, systems and methods for item delivery and execution," and lists "InterTrust
Technologies Corp." as the assignee. Microsoft admits that a copy of the '683 Patent was
attached to the copy of the Second Amended Complaint delivered to counsel for Microsoft, but
denies that such copy was full and complete insofar as it did not include any material purportedly
incorporated by reference therein. Microsoft denies that the '683 Patent was duly and lawfully
issued. Microsoft further denies any and all remaining allegations of paragraph 7 of the Second
Amended Complaint.

8. Microsoft admits that on its face the title page of U.S. Patent No. 6,253,193
Bl ("the '193 Patent") states that it was issued June 26, 2001, is entitled "Systems and methods
for the secure transaction management and electronic rights protection," and lists "InterTrust
Technologies Corporation" as the assignee. Microsoft admits that a copy of text associated with
the '193 Patent was attached to the copy of the Second Amended Complaint delivered to counsel
for Microsoft, but denies that such copy was full and complete as it did not include, among other

DOCSSVl:158-U5.1

Microsoft's Corporation's Answer to Second
Am!:Ndi;d Complaint, Case No. C0I-I640SBA

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OKKH'K
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& Sui t 1. 1 1 ->T. LLP

things, any of the drawings or figures. Microsoft further denies such copy was full and complete
insofar as it did not include any material purportedly incorporated by reference therein. Microsoft
denies that the * 193 Patent was duly and lawfully issued. Microsoft further denies any and all
remaining allegations of paragraph 8 of the Second Amended Complaint.

9. Microsoft admits that on its face the title page of U.S. Patent No. 5,940,504
("the '504 Patent") states that it was issued August 17, 1999 and is entitled "Licensing
management system and method in which datagrams including an addressee of a licensee and
indicative of use of a licensed product are sent from the licensee's site." Microsoft admits that a
copy of the 4 504 Patent was attached to the copy of the Second Amended Complaint delivered to
counsel for Microsoft. Microsoft denies that the '504 Patent was duly and lawfully issued.
Microsoft further denies any and all remaining allegations of paragraph 9 of the Second Amended
Complaint.

10. Microsoft admits that on its face the title page of U.S. Patent No. 5,920,861
("the '861 Patent") states that it was issued July 6, 1999, is entitled "Techniques for defining,
using and manipulating rights management data structures," and lists "InterTrust Technologies
Corp." as the assignee. Microsoft admits that a copy of the '861 Patent was attached to the copy
of the Second Amended Complaint delivered to counsel for Microsoft, but denies that such copy
was full and complete insofar as it did not include any material purportedly incorporated by
reference therein. Microsoft denies that the '861 Patent was duly and lawfully issued. Microsoft
further denies any and all remaining al legations of paragraph 10 of the Second Amended
Complaint.

1 1 . Microsoft repeats and reasserts its responses to paragraphs 1-7 of the
Second Amended Complaint, as if fully restated herein.

1 2. Microsoft admits that the Second Amended Complaint purports to state a
cause of action under 35 U.S.C. §§271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Second Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 1 2 of the Second Amended Complaint.

13. Microsoft denies any and all allegations of paragraph 13 of the Second

DOCSSVl:158435.1

M icrosofTs Corporation's Answer to Second
Amended Complaint, Case No. C 01- 1 640 SBA

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Amended Complaint.

1 4. Microsoft denies any and all allegations of paragraph 14 of the Second
Amended Complaint.

1 5. Microsoft denies any and all allegations of paragraph 15 of the Second
Amended Complaint.

1 6. Microsoft denies any and all allegations of paragraph 16 of the Second
Amended Complaint.

1 7. Microsoft denies any and all allegations of paragraph 17 of the Second
Amended Complaint.

1 8. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 8 of the
Second Amended Complaint, as if fully restated herein.

1 9. Microsoft admits that the Second Amended Complaint purports to state a
:ause of action under 35 U.S.C. §§ 271 and 281 . Microsoft denies that it has infringed or now
nfringes the patents asserted against Microsoft in the Second Amended Complaint. Microsoft
ienies any and all remaining allegations of paragraph 19 of the Second Amended Complaint.

20. Microsoft denies any and all allegations of paragraph 20 of the Second
\mended Complaint.

2 1 . Microsoft denies any and all allegations of paragraph 21 of the Second
\mended Complaint.

22. Microsoft denies any and all allegations of paragraph 22 of the Second
Vmended Complaint.

23. Microsoft denies any and all allegations of paragraph 23 of the Second
Amended Complaint.

24. Microsoft denies any and all allegations of paragraph 24 of the Second
Amended Complaint.

25. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 9 of the
Jecond Amended Complaint, as if fully restated herein.

//

DOCSSVl:l58435.1

Microsoft's Corporation's Answer to Second
Amended Complaint, Case No. C 01-1640 SBA

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26. Microsoft admits that the Second Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281 . Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Second Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 26 of the Second Amended Complaint.

27. Microsoft denies any and all allegations of paragraph 27 of the Second
Amended Complaint.

28. Microsoft denies any and all allegations of paragraph 28 of the Second
Amended Complaint.

29. Microsoft denies any and all allegations of paragraph 29 of the Second
Amended Complaint.

30. Microsoft denies any and all allegations of paragraph 30 of the Second
Amended Complaint.

3 1 . Microsoft denies any and all allegations of paragraph 31 of the Second
Amended Complaint.

32. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 10 of
the Second Amended Complaint, as if fully restated herein.

33. Microsoft admits that the Second Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 27 1 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Second Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 33 of the Second Amended Complaint.

34. Microsoft denies any and all allegations of paragraph 34 of the Second
Amended Complaint.

35. Microsoft denies any and all allegations of paragraph 35 of the Second
Amended Complaint.

36. Microsoft denies any and all allegations of paragraph 36 of the Second
Amended Complaint.

37. Microsoft denies any and all allegations of paragraph 37 of the Second

Amended Complaint.

DOCSSVl:158435.1

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Microsoi : t's Corporation's Answer to Second
Amended Complaint, Case No. C01-K540 SBA

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38. Microsoft denies any and all allegations of paragraph 38 of the Second
\mended Complaint.

AFFIRMATIVE AND OTHER DEFENSES

Further answering the Second Amended Complaint, Microsoft asserts the
Allowing defenses. Microsoft reserves the right to amend its answer with additional defenses as
\irther information is obtained.

First Defense: Noninfringement of the Asserted Patents

1 . Microsoft has not infringed, contributed to the infringement of, or induced
he infringement of U.S. Patent No. 6,185,683 Bl ("the '683 Patent"), U.S. Patent No. 6,253,193
il ("the '193 Patent"), U.S. Patent No. 5,940,504 ("the '504 Patent") or U.S. Patent No.
i,920,861 ("the '861 Patent"), and is not liable for infringement thereof.

2. Any and all Microsoft products or actions that are accused of infringement
tave substantial uses that do not infringe and therefore cannot induce or contribute to the
nfringement of the c 683 Patent, the '193 Patent, the '504 Patent or the '861 Patent.

Second Defense: Invalidity of the Asserted Patents

3. On information and belief, the '683 Patent, the '193 Patent, the '504 Patent
nd the '861 Patent are invalid for failing to comply with the provisions of the Patent Laws, Title
5 U.S.C., including without limitation one or more of 35 U.S.C. §§ 102, 103 and 112.

Third Defense: Unavailability of Relief

4. On information and belief, Plaintiff has failed to plead and meet the
equirements of 35 U.S.C. § 271(b) and is not entitled to any alleged damages prior to providing
ny actual notice to Microsoft of the '683 Patent, the '1 93 Patent, the '504 Patent or the '861
atent.

Fourth Defense: Unavailability of Relief

5. On information and belief, Plaintiff has failed to plead and meet the
squirements of 35 U.S.C. § 284 for enhanced damages and is not entitled to any damages prior to
roviding any actual notice to Microsoft of the '683 Patent, the '193 Patent, the '504 Patent,
nd/or the '861 Patent, and any alleged infringement thereof.

DCX3SV1:158-U5.I

Microsoft's Corporation's Answer to Second
Amended Complaint, Case No. C 01 -1 640 SBA

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Fifth Defense: Unavailability of Relief

6. On information and belief, Plaintiff has failed to plead and meet the
equirements of 35 U.S.C. § 287, and has otherwise failed to show that it is entitled to any
lama-ges.

Sixth Defense: Prosecution History Estoppel

7. Plaintiffs alleged causes of action for patent infringement are barred under
he doctrine of prosecution history estoppel, and Plaintiff is estopped from claiming that the '683
3 atent, the 4 193 Patent, the '504 Patent, and/or the '861 Patent covers or includes any accused
Microsoft product or method.

Seventh Defense: Dedication to the Public

8. Plaintiff has dedicated to the public all methods, apparatus, and products
lisclosed in the '683 Patent, the 4 1 93 Patent, the '504 Patent, and/or the '861 Patent, but not
iterally claimed therein, and is estopped from claiming infringement by any such public domain
nethods, apparatus, and products.

Eighth Defense: Use/Manufacture By/For United States Government

9. To the extent that any accused product has been used or manufactured by
>r for the United States, Plaintiffs claims and demands for relief are barred by 28 U.S.C. § 1498.

Ninth Defense: License

1 0. To the extent that any of Plaintiff s allegations of infringement are
(remised on the alleged use, sale, or offer for sale of products that were manufactured by or for a
icensee of InterTrust and/or provided by or to Microsoft to or by a licensee of InterTrust, such
negations are barred pursuant to license.

Tenth Defense: Acquiescence

1 1 . Plaintiff has acquiesced in at least those acts of Microsoft that are alleged
:> infringe the '861 Patent, the '683 Patent, and the '193 Patent.

Eleventh Defense: Laches

1 2. Plaintiffs claims for relief are barred, in whole or in part, by the equitable
octrine of laches.

DOCSSVI:158435.1

Microsoft's Corporation's Answer to Second
" Amended Complaint, Case No. C 01-1640 SB A

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PRAYER FOR RELIEF

WHEREFORE, Microsoft prays for the following relief:

A. The Court enter judgment against InterTrust on, and dismiss with
Drejudice, any and all claims of the Second Amended Complaint;

B. The Court award to Microsoft its reasonable costs and attorneys' fees; and

C. The Court grant to Microsoft such other and further relief as may be
deemed just and appropriate.

DATED: August 29, 2001

By:

ERIC L. WESENBERG
MARK R. WEINSTEIN
ORRICK HERRINGTON & SUTCLIFFETLLP
1000 Marsh Road
MenloPark,CA 94025
Telephone: 650-614-7400

STEVEN ALEXANDER
KRISTIN L. CLEVELAND
JAMES E. GERINGER
JOHN D. VANDENBERG
KLARQUIST SPARKMAN, LLP
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, OR 97204
Telephone: (503) 226-7391

Attorneys for Defendant
Microsoft Corporation

DOCSSVl:158435.1

Microsoft's Corporation's Answer to Second
Amended Complaint, Case No. C 01-1640 SBA